Loi n° 32 de 1999 sur les brevets (telle que modifiée jusqu'à la loi n° 17 de 2017), Jordanie

Law No. 32 of 1999 on Patents1 (as amended by Temporary Law No. 71 of 2001)2

Patents Regulations Official Gazette No. 4522 dated 13.12.2001

TABLE OF CONTENTS

Page

Article 1 ...................................................................................... 2 Article 2 ...................................................................................... 2 Article 3 ...................................................................................... 2 Article 4 ...................................................................................... 3 Article 5 ...................................................................................... 3 Article 6 ...................................................................................... 3 Article 7 ...................................................................................... 4

Registering Patents Article 8 ...................................................................................... 4 Article 9 ...................................................................................... 5 Article 10 ...................................................................................... 5 Article 11 ...................................................................................... 5 Article 12 ...................................................................................... 5 Article 13 ...................................................................................... 6 Article 14 ...................................................................................... 6 Article 15 ...................................................................................... 6 Article 16 ...................................................................................... 6 Article 17 ...................................................................................... 6 Article 18 ...................................................................................... 6 Article 19 ...................................................................................... 7 Article 20 ...................................................................................... 7

The Patentee Rights Article 21 ...................................................................................... 7

Compulsory Licenses for Patent Exploitation Article 22 ...................................................................................... 7 Article 23 ...................................................................................... 8 Article 24 ...................................................................................... 8 Article 25 ...................................................................................... 8 Article 26 ...................................................................................... 8

Patent Assignment, Pledge and Seizure Article 27 ...................................................................................... 9 Article 28 ...................................................................................... 9 Article 29 ...................................................................................... 9

Patent Elapse and Invalidation Article 30 ...................................................................................... 9

Industrial Property Registration Agents Article 31 ...................................................................................... 9

Offenses and Penalties Article 32 ...................................................................................... 10

Precautionary and Other Measures Article 33 ...................................................................................... 10

Article 34 ...................................................................................... 11 Concluding Provisions

Article 35 ...................................................................................... 11 Article 36 ...................................................................................... 11 Article 37 ...................................................................................... 12 Article 38 ...................................................................................... 12 Article 39 ...................................................................................... 13 Article 40 ...................................................................................... 13

Article 1

This Law (amended patent Law of 2001) shall be read in conjunction with Law No. 32 of 1999, referred to herein as original Law, and shall be deemed one Law; and shall be effective thirty days after the date of publication in the Official Gazette.

Article 2

The following terms and expressions wherever mentioned in this law shall have the meanings assigned against them unless the context requires otherwise:

The Ministry: The Ministry of Trade & Industry.

The Minister: The Minister of Trade & Industry.

The Invention: Any innovative idea, in any of the fields of technology, which relates to a product or a manufacturing process or both and practically solves a specific problem in any of those fields.

The Patent: The granted certificate for the invention protection.

The Patentee: The natural or legal person to whom the patent is granted.

The Register: The Patents Register.

The Registrar: The Patents Registrar of the Ministry.

Article 3

The invention shall be patentable if it meets the following conditions:

If it is novel as regards the prior industrial art and is unprecedented as regards disclosure to the public in any place in the world by means of written or oral disclosure, by use, or by any other way which allows awareness of the invention’s content before the relevant filing date of the patent application or the priority of the application claimed under the provisions of this law.

The disclosure of the invention to the public shall not be taken into account if it occurred twelve months before the filing date of the application or before its priority date, if any, and it occurred due to actions taken by the applicant or his predecessor or due to an abuse made by third parties against the applicant or his predecessor.

If it involves an inventive step that, having regard to the prior art relevant to the patent application, it would not have been obvious to a person having ordinary skill in the prior art of the invention subject.

If it is industrially applicable that it can be made or used in any type of agriculture, fishing, service or industry in their widest senses including handicraft.

Article 4

A patent shall not be granted in the following cases:

The inventions whose exploitation is detrimental to public order or public morality.

The inventions whose non-exploitation is necessary to protect the life and health of humans, animals and plants or to avoid severe damage to the environment.

For implementing the provisions of items (1) and (2) of this paragraph, non-granting of protection shall not be provided for just because such patent exploitation is disallowed under other enforceable laws.

Discoveries, scientific theories and mathematical methods.

Diagnostic, therapeutic and surgical methods necessary for the treatment of humans or animals.

Plants and animals other than microorganisms.

Biological methods for the reproduction of plants and animals other than non-biological and microbiological methods.

Article 5

The right to a patent grant shall be as follows:

To the inventor or his successor

A. If the invention is a result of joint efforts among several persons, all of them shall be equal partners in the patent unless otherwise is agreed upon.

1. If several persons think up a patent separately and independently, then the right shall belong to the applicant who files it before the others do.

B. To the benefit of the employer, if the invention conducted by the employee during his employment, relates to the activities or business of the employer, or if the employee uses in his attempt to conduct his invention the experiences, business, information, instruments or the articles of the employer under his own disposal, unless otherwise agreed upon in writing.

C. To the benefit of the employee, if the invention conducted, is not related to the activities or business of the employer and the employee does not use in his attempt to conduct this invention the experiences, information, instruments or raw materials of the employer, under the employee’s own disposal, unless otherwise agreed upon in writing.

Article 6

Canceled.

Article 7

A. A register called the Patents of Inventions Register shall be kept in the Ministry under the supervision of the Registrar. All the particulars relating to inventions shall be recorded therein including the owners’ names and addresses, the granted patents and all legal disposals and recordals including the following:

1. Any transfer or assignment or license to third parties to use with due consideration to the confidentiality of the license contract.

2. Mortgage or seizure of the patent or any limitation on its use.

B. The public may review the Register as per the regulations to be issued by the Minister for this purpose and to be published in the official Gazette.

C. The computer may be used for recording patents and their particulars and the particulars and extracts of the computer shall be binding to all.

Registering Patents

Article 8

A. Any person shall be entitled to file a patent application on the form prescribed for this purpose as per the following procedure:

1. A patent application shall be submitted to the Registrar with the detailed description of the invention. The description shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person having ordinary skill in the art while stating the best mode for carrying out the invention known to him on the application date or the priority date.

2. The patent owner shall file complete particulars on the applications on the same patent subject matter which he filed in other countries including the results of such applications. If applications relating to biologic substances or microorganisms are filed, the applicant shall submit a proof that he filed specimen to one of the specialized centers.

3. The application shall be accompanied by a statement justifying the applicant’s right to the patent.

4. The application shall determine the claims which the applicant wishes to protect. The claims shall be concise and clear and be fully supported by the whole description, and the drawings may be used in interpreting the claims.

5. The application shall include an abstract of the patent specification, and the new elements to be protected, inventor’s and applicant’s names and addresses, for the purposes of publication in the Official Gazette.

B. The date on which the Registrar receives the application shall be regarded as its filing date provided that it meets the requirements and it is accompanied by the documents prescribed in the regulations to be issued for this purpose.

C. The Registrar may request the applicant to make amendments of the application and to complete the required particulars prescribed by the law or regulations provided that the amendments don’t exceed what has been disclosed in the original application. If the applicant

doesn’t do so during the period to be fixed in the regulations, then the applicant will be regarded to have lost his right in the application under a decision of the Registrar and the applicant may appeal the decision to the High Court of Justice within 60 days of the decision notification date.

Article 9

A. The application for the registration of a patent shall be limited only to one invention or a group of related inventions as to constitute a single general inventive concept.

B. The applicant may introduce amendments to his application, before it is granted, provided that such amendments don’t exceed what has been disclosed in the original application.

C. The applicant may divide his application to sub-applications, before the patent is granted, provided that each sub-application doesn’t exceed what has been disclosed in the original application. Each of the sub-applications shall have the original filing date or the original priority date if any.

Article 10

A.1. The applicant may include a notice of priority claim of a national, regional or international application which he or his predecessor previously filed in any state which relates to Jordan by a bilateral or multilateral agreement for the protection of industrial property provided that the application is filed in the Kingdom within a period of no more than 12 months calculated from the day following the filing day of the first application.

2. If the application includes the priority notice, then the Registrar may ask the applicant to submit, during the period prescribed in the regulations, a certified copy of the original application from the office with which the application has been filed. In this case the application date shall be regarded as the same date on which the application was filed in the foreign country as per the Paris Convention for the Protection of Industrial Property.

B. If the applicant does not prove priority under paragraph (A) of this Article, then his application shall be recorded on the date it is filed with the Registrar.

Article 11

Notwithstanding the provisions of this law, the heirs to the dead inventor who possesses an invention and who has not applied for its registration shall have the right to apply for its registration in their names provided that the name of the true inventor is mentioned.

Article 12

The applicant may file amendment applications to the patent specifications or explanatory drawings before it is published in the Official Gazette by indicating the nature of the amendment or its justifications ; provided that such amendments don’t change the essence of the invention or what has been disclosed in the original application and provided that the applications to amend go through the same procedures as those of the original application for registration.

Article 13

A. If the application meets the conditions prescribed in this law, the Registrar shall declare his acceptance of it and grant the applicant a preliminary acceptance. Then he shall publish a notice in the Official Gazette including the abstract of the invention or any drawings or particulars relating thereto, if any. The period in which publication should take place and the particulars to be published shall be determined in the regulations to be issued for this purpose.

B.1. Without prejudice to the provisions of Article 36 of this law, the applicant shall have a provisional protection during the period between the acceptance date and the grant date. In this case the applicant shall have the right to exploit the invention and to take measures to prove any infringement upon his invention during this period.

2. The applicant shall be entitled to take, after the patent grant, any legal measures to stop an infringement upon his patent and to claim damages if the infringement continues.

Article 14

Any person may, within 3 months of the publication date of the notice of preliminary acceptance in the Official Gazette, notify the Registrar of his opposition to the patent grant. The opposition procedures, the cases in which it is allowed to extend the opposition period, and the notifications shall be determined in the regulations to be issued for this purpose.

Article 15

A. If no opposition is filed to the patent grant or if the filed opposition is rejected, the decision granting the patent shall be issued after the payment of the prescribed fees.

B. If the applicant dies before the patent is granted, the patent shall be granted to his heirs or his legal successor after submitting the supporting documents.

Article 16

The Registrar shall not be held answerable as regards the novelty, inventive step, industrial applicability, the standardization compliance, or the usefulness of the invention patent, and all those shall rest with the patentee.

Article 17

The duration of the patent of invention shall be for 20 years as of the date of the application for registration under the provisions of this law.

Article 18

A. If a patent is granted and if its patentee applies for an additional invention due to any improvement or amendment thereto, he may obtain a patent of addition and it shall be valid for the remaining period of the original patent of invention.

B. The patent of addition shall be subject to the provisions of this law relating to the original patent.

Article 19

The fees which shall be levied on the patent applications, grants and additional patents shall be determined in the regulations to be issued for this purpose.

Article 20

A. A special Regulation shall be issued for providing for the procedures and bases for the temporary protection of the inventions displayed by their inventors in exhibitions in the Kingdom or abroad.

B. The temporary protection governed in paragraph (A) of this Article shall not entail extending the priority period provided for in this law.

The Patentee Rights

Article 21

A. A patent shall grant its owner the following rights:

1. Where the subject of the patent is a product, the right to prevent any person who hasn’t obtained the owner’s authorization from making, exploiting, using, offering for sale, selling or importing that product.

2. Where the subject of the patent is a industrial process, the rights to prevent any person who hasn’t obtained the owner’s authorization from using the process or the product directly made by the process, or offering for sale, or selling or importing the product.

B. The patentee shall be entitled to assign it to third parties or to license its use.

C. Notwithstanding any conflicting provision in this law or any other law, all types of scientific research and development and filing applications for obtaining marketing permits carried out before the elapse of the patent protection period shall not be regarded as infringement neither civil nor criminal.

Compulsory Licenses for Patent Exploitation

Article 22

The Minister may grant a license to use a patent to third parties without obtaining the patentee’s consent in any of the following cases exclusively:

A. If the use of the patent by the state authorities or licensed third parties is a necessity for national defense or emergency or for noncommercial public good provided that the patentee is notified as soon as it becomes possible.

B.1. If the patentee doesn’t exploit it or exploits it insufficiently before the elapse of 4 years as of the application date or 3 years as of the granting date, the period to be applied is the one that elapses later. However, the Minister may grant the patentee an additional grace period if he deems that reasons beyond the control of the patentee have prevented exploitation.

2. For the purposes of item (1) of this paragraph, and without prejudice to the provisions of the related International Conventions, the importation of the subject goods of the patent to the kingdom shall be deemed utilization of the patent.

C. If the patentee exercises his rights in such a way as to prevent others from competing fairly.

Article 23

The following shall be taken into consideration when compulsory licenses are granted:

A. Each application for a license shall be decided separately for its specific conditions and circumstances.

B. The applicant shall have tried to obtain a license from the patentee under reasonable remuneration and conditions but did not reach an agreement during a reasonable period of time in the case provided for in paragraph (B) of Article 22 of this law.

C. The scope and duration of the license shall be limited to the purpose for which it is granted. If the license application relates to semiconductor technology, then it shall only be granted for noncommercial public good or to rectify practices deemed by the competent judicial or administrative authority to be anticompetitive.

D. The license to exploit shall not be exclusive.

E. The license shall not be assignable to third parties.

F. The license shall only be granted for meeting the demand in the local market other than for the case provided for in paragraph (C) of Article 22 of this law.

G. The patentee shall receive an equitable remuneration which takes into account the economic value of the patent.

Article 24

The Minister may cancel the compulsory license by himself or on the strength of an application from the patentee if the reasons for its grant disappeared. This license cancellation shall however preserve the rights of those involved in the compulsory license.

Article 25

The provisions and procedures related to licensing of patent utilization shall be prescribed pursuant to regulations to be issued to this aim.

Article 26

The Minister’s compulsory-licence decision shall be appealable to the High Court of Justice within 60 days of its notification.

Patent Assignment, Pledge and Seizure

Article 27

A. A patent title shall be transferable wholly or partially with or without compensation and be subject to pledge and seizure.

B. The patent title and all its rights shall be transferable by inheritance.

Article 28

The patent assignment, pledge or seizure shall not have any effect against third parties except as of the recordal date in the Patent Register and publication in the Official Gazette.

Article 29

The procedures for patent assignment pledge or seizure as well as all legal patent disposals shall be governed in the regulations to be issued by the Minister for this purpose and be published in the Official Gazette.

Patent Elapse and Invalidation

Article 30

A. The patent title and rights shall lapse in any of the following cases:

1. The elapse of the protection period under the provisions of this law.

2. Issuance of a final judgment on the patent invalidation by the competent authority.

3. Nonpayment of the annuity fees and any fine thereof after the elapse of 6 months of the due date.

B. The Registrar shall announce the lapsed patents under paragraph (A) of this Article in the way prescribed in the regulations to be issued for this purpose.

C.1. Whoever is concerned may resort to the High Court of Justice for invalidation of the patent granted in contravention to the provisions of this law. The Registrar shall strike the patent off the Register when the invalidation decision is issued.

2. The Registrar may strike off a patent if he deems that it has been granted in contravention to the conditions provided for in this law. His decision shall be appealable to the High Court of Justice and the patent protection shall continue to be valid till the court issues a decision on the case.

Industrial Property Registration Agents

Article 31

A.1. No person may practice the profession of industrial property registration agent or to claim to be as such unless his name is recorded with the Agents Register kept with the Registrar for this purpose or is registered with the Jordanian Bar Association.

2. Whoever contravenes the provision in item (1) of this paragraph shall be penalized with a fine of no less than 1000 Jordanian Dinars and of no more than 5000 Jordanian Dinars.

B. The implementing regulations shall determine the conditions for the those who are entitled to practice the industrial property registration agent profession.

Offenses and Penalties

Article 32

A. Whoever commits, with the intention to infringe, any of the following deeds shall be punished by an imprisonment term of no less than three months and of no more than one year or a fine of no less than 100 Jordanian Dinars and of no more than 3000 Jordanian Dinars or by both of those penalties:

1. Imitates, for the purpose of industrial use or commercial exploitation, the subject of a patent protected under this law.

2. Sells, possesses for sale, offers for sale or circulation, or imports from abroad products imitating the patent subject if the patent is registered in the Kingdom.

3. Affixes misleading indications leading to the belief that he obtained a patent or license to exploit it on his products, trademarks, advertisements, or packagings.

B. The provisions of paragraph (A) shall apply to those who start with any of the acts mentioned therein or aided and abetted their commission.

C. The patent owner may claim damages for any damage or loss sustained due to any of the acts provided for in paragraph (A) & (B) of this Article.

Precautionary and Other Measures

Article 33

A. The owner of a patent registered in the Kingdom may request the court to do the following while it reviews the lawsuit provided that he submits with the application a bank or monetary guarantee accepted by the court:

1. To stop the infringement.

2. To make a precautionary seizure of the products subject of the infringement wherever they are.

3. To preserve the infringement evidence.

B. Before he files his civil or criminal lawsuit, the patentee who claims an infringement upon his patent may ask the court to take any of the measures provided for in paragraph (A) of this Article without notifying the defendant if he proves to be the patentee and that his patent is being infringed upon or is about to be infringed upon and he is likely to sustain irreparable damage or is worried that the pieces of evidence will be hidden or destroyed provided that those requirements are accompanied by a bank or monetary guarantee accepted by the court. The defendant may appeal such a decision within 8 days as of the date on which

he was notified of it or understood it. The decision of the appellate court shall be unappealable.

C. If the patentee doesn’t proceed with his lawsuit within 8 days of the court’s decision, all the measures taken shall be regarded as null and void.

D. On the ground of an application by the defendant accompanied by a bank or monetary guarantee which the court accepts, the court may stop the precautionary measures including the closing down of the enterprise, factory, and so on. This decision shall be appealable within 8 days as of the date of its notification. The decision of the appellate court shall be non-appealable.

E. The defendant may claim an equitable compensation if it is proven, as a result of the lawsuit, that the plaintiff is not rightful in his claim or that he hasn’t filed his lawsuit within the prescribed period.

F. In all cases the court may use the experts’ opinions for the purposes of implementing the provisions of this law.

G. The court may decide to seize the products, implements and materials the predominant use of which was in making the products or which the infringement was committed with. The court may order to destroy them or to dispose of them for noncommercial purposes.

Article 34

A. The court may order the defendant in a patent infringement lawsuit to prove that his product manufacturing method is different from that of the protected patent if production has been carried out without the patentee’s consent and if it was likely that the identical product was made with the protected process and the patentee was unable to specify the process actually used despite his reasonable efforts to do so.

B.1. The court shall take into consideration, when it requests proof under paragraph (A) of this Article, the legitimate interests of the defendants in protecting their industrial and commercial secrets.

2. If such secrets have been disclosed while reviewing a lawsuit filed by the plaintiff but he wasn’t rightful in his claim, the defendant shall have the right to claim damages for losses sustained which are to be determined by the court.

Concluding Provisions

Article 35

The provisions of this law shall apply to the patents granted under the provisions of the Patents and Designs Law No. 22 for the Year 1953 and its amendments which are still enforceable when the provisions of this law come into force.

Article 36

A. Patents of invention shall be granted for manufacturing and chemical processes relating to chemical products, pharmaceuticals and foodstuffs.

B. After the enforceability date of this law, it shall be permissible to file patent applications for registering inventions involving the protection of final products for chemicals relating to pharmaceuticals or medicines or foodstuffs.

C. Deciding the applications referred to in the previous paragraph (B) shall only be made after the enforceability date of this Article.

D. Without prejudice to the provisions of any other law, the Minister may grant the applicant for a patent registration the exclusive right to market the chemical products relating to medicines or pharmaceuticals or foodstuffs covered by the patent subject for five years or until the date of patent grant or rejection whichever is shorter if the following takes place after the enforceability date of this Article:

1. Filing an application for obtaining a patent of invention in the Kingdom relating to the products mentioned in this Article.

2. Filing an application for an invention patent in another country member of the World Trade Organization and the patent has been granted.

3. Granting a permit for marketing the product in the other country.

4. Granting a permit to register the medicine in the Kingdom by the Ministry of Health.

E.1. The provisions of paragraphs (C) & (D) of this Article shall come into force after the elapse of one month as of the Cabinet’s decision to do so, within 3 years as of the date of Jordan’s joining the World Trade Organization.

2. In case of non-issuance of the decision referred to in item (1) of this paragraph, the provisions of the said two paragraphs shall come into force under the law when the 3-year period elapses.

Article 37

A. The provisions of this law shall not prevent any person from importing any materials or goods from a third party if that party enjoys the legal protection of the same patent protected in the Kingdom and if that importation is lawful, complies with the principles of commercial competition and fairly takes into account the economic value of the protected patent.

B. In spite of the inclusions of paragraph (A) of this article and without prejudice to the provisions of the related International conventions, goods covered by patent of invention may not be imported by any Licensee, if the Licensing contract prohibit him from importation to the kingdom, provided that the patent owner notify in writing the Customs Administration and the Registrar in this respect. The Registrar shall, at the expense of the patent owner, publish this notification in at least one of Local daily gazettes; and the applicable legislations shall apply to this case.

Article 38

The Council of Ministers shall issue the necessary regulations for implementing the provisions of this law including fixing the fees to be levied.

Article 39

The Patents of Invention and Industrial Designs Law No. 22 for the Year 1953 and its amendments and the provisions of any other law to the extent they conflict with the provisions of this law.

Article 40

The Prime Minister and the Ministers shall be commissioned with implementing the provisions of this law.

1 Official Gazette No. 4389 dated 1.11.1999

2 Official Gazette No. 4520 dated 2.12.2001